Tuesday, 5 June 2012

Zambia's message to brand owners - register!

In July 2010 Afro-IP reported on an important trade mark decision in Zambia under the post "Is Zambia first-to-file only?". The Zambian Registry dismissed the relevance of user rights notwithstanding that the laws of that country apparently recognise common law trade marks. Afro Leo commented on the curious ruling at the time.

Well, the ruling has now gone on appeal and the Supreme Court of Zambia has surprisingly agreed with the decision of Mrs Bando-Bobo of the Registry!

Afro Leo is pleased to know that he is not the only commentator who feels that the decisions are at odds with the Zambia legal system - Alan Smith and Nicole Howarth recently published an analysis of the judgement (DH Brothers Industries (Pty) Limited v Olivine Industries (Pty) Limited) in which they describe the situation as "worrisome and perplexing" and conclude that:

"The rationale behind that judgement is that, although Zambian law recognises a proprietor’s rights associated with an unregistered mark, the Zambian Trade Marks Act does not offer any protection in respect of those rights."

For trade mark owners, the position is clear - if you want protection in Zambia for your trade marks then register them! Afro Leo adds that one should use the national registration system to do so - although Zambia is a signatory to the Madrid System allowing Zambia to be designated using an International Registration, the local laws have not been domesticated to give effect to the Madrid arrangement meaning that there is some doubt as to whether IRs are protectable in that country. Indeed, recently he was advised by a local agent that they were not protectable.